“Ice MillerSM“? Yeah, it must have seemed like a good idea at the time. They actually were using this on their stationery — some “branding” concept; all the rage five to ten years ago in law firm marketing — until they stopped some time in early 2005. (Let’s just say I have an extensive collection of their stationery.) They’re damned serious lawyers and decided to go back to looking like it.

You can’t blame them entirely; it’s not as if trademarky things don’t happen with law firm names — they do. But when your firm name already sounds like an adult beverage, you may want to keep the branding part a little more subdued.

December 22, 2012 | Comments Off on Best of 2012: The way of all flash

So, what happens when a trademark registration lapses? The post at the link, by Corsearch, is, yeah, kind of an advertisement for Corsearch. But it features a great video that vividly demonstrates what happened to the erstwhile Pepsi trademark, CHOICE OF A NEW GENERATION, which, they explain, “was picked up by another company, Better Oats, which is owned by MOM Brands (formerly Malt-O-Meal),” the latter of which is now using the slogan used by Pepsi from 1984 -1991.

[youtube http://www.youtube.com/watch?v=etIn5RXGmtc]

It’s an adorable video — at least, if you like balding, saftig, middle-aged guys in their pajamas. And who doesn’t?!

I suppose the question being raised is, do we think Pepsi regrets its choice about the trademark of a previous generation of marketers? Does this silly, albeit engaging, commercial for Better Oats reflect in any way backwards on Pepsi?

It’s an interesting query, because the rich are different from you and me. Almost all trademark registrations that are abandoned are, well, abandoned trademarks — forgotten and un-mourned, as often as not along with the product or service with which they were originally associated. But Pepsi, of course, is still Pepsi; more significantly, in some ways just about every media campaign Pepsi has ever run is probably still alive in some way, too.

[youtube http://www.youtube.com/watch?v=t1zvvIjzHWQ]

Baby Boomers and others raised on mass media never let go of the trivia, TV images and radio spots burned deep into our neural pathways as formerly young people. That’s especially true of the hammer-marketing pounded into us by major brands such as Pepsi once they settle on a new slogan. How many Americans between 35 and 50, asked to identify what exactly is “the choice of a new generation,” would not think of Pepsi? Even if the answer were only 10-20%, why, that’s millions of fine high-fructose-corn-syrup-guzzling Americans right there!

Does Pepsi risk anything, brand-wise, by letting its tagline-made-trademark (hey, sometimes it really is one), in which it once invested bazillions of dollars, be associated with a silly midlife ode to breakfast cereal? Huh? Does it? Does it?

One intellectual property attorney explains that Pepsi could attempt to hold onto the slogan by claiming “‘residual goodwill’… even though you are no longer using the mark, consumers [could] still associate that mark with the original user.”

Get real! (Um, not the Real Thing real. Just regular real.) God help us if the Lanham Act really did protect “residual goodwill” — what possible rationale could there be for that?

Remember: Pepsi did not let a trademark “lapse.” It let a TRADEMARK REGISTRATION lapse. If Pepsi were still using this trademark, it could enforce its rights in it by demonstrating that continued use, and get a new registration. Pepsi is not using the mark. There is, therefore, abandonment. There is no “residual” goodwill where there is abandonment. As I just wrote with respect to trade dress and private labels, “You can’t stitch together different packaging used at different times to create a ‘dynamic’ or pastiche trade dress protectible under the Lanham Act.”

Same with any trademark: You’re using it or you aren’t. Residue won’t do; you get the entirely satisfying reward of creating a moment in popular culture, or media, history, and no more.

The brand-rich are different from you and me, yes (ever hear of trademark dilution? Or, as Lara Pearson explains, the BLUE IVY trademark application?), but not that different; not yet. Pepsi has moved on and, it’s okay to let go. Thank you for doing so, Pepsi, and letting MOM Brands make this commercial, bringing new life (oops) to your old trademark for a new generation. From now on, whenever I think of oatmeal, I’ll think of you, Pepsi. In the nicest possible way!

So, what happens when a trademark registration lapses? The post at the link, by Corsearch, is, yeah, kind of an advertisement for Corsearch. But it features a great video that vividly demonstrates what happened to the erstwhile Pepsi trademark, CHOICE OF A NEW GENERATION, which, they explain, “was picked up by another company, Better Oats, which is owned by MOM Brands (formerly Malt-O-Meal),” the latter of which is now using the slogan used by Pepsi from 1984 -1991.

It’s an adorable video — at least, if you like balding, saftig, middle-aged guys in their pajamas. And who doesn’t?!

I suppose the question being raised is, do we think Pepsi regrets its choice about the trademark of a previous generation of marketers? Does this silly, albeit engaging, commercial for Better Oats reflect in any way backwards on Pepsi?

It’s an interesting query, because the rich are different from you and me. Almost all trademark registrations that are abandoned are, well, abandoned trademarks — forgotten and un-mourned, as often as not along with the product or service with which they were originally associated. But Pepsi, of course, is still Pepsi; more significantly, in some ways just about every media campaign Pepsi has ever run is probably still alive in some way, too.

Baby Boomers and others raised on mass media never let go of the trivia, TV images and radio spots burned deep into our neural pathways as formerly young people. That’s especially true of the hammer-marketing pounded into us by major brands such as Pepsi once they settle on a new slogan. How many Americans between 35 and 50, asked to identify what exactly is “the choice of a new generation,” would not think of Pepsi? Even if the answer were only 10-20%, why, that’s millions of fine high-fructose-corn-syrup-guzzling Americans right there!

Does Pepsi risk anything, brand-wise, by letting its tagline-made-trademark (hey, sometimes it really is one), in which it once invested bazillions of dollars, be associated with a silly midlife ode to breakfast cereal? Huh? Does it? Does it?

One intellectual property attorney explains that Pepsi could attempt to hold onto the slogan by claiming “‘residual goodwill’… even though you are no longer using the mark, consumers [could] still associate that mark with the original user.”

Get real! (Um, not the Real Thing real. Just regular real.) God help us if the Lanham Act really did protect “residual goodwill” — what possible rationale could there be for that?

Remember: Pepsi did not let a trademark “lapse.” It let a TRADEMARK REGISTRATION lapse. If Pepsi were still using this trademark, it could enforce its rights in it by demonstrating that continued use, and get a new registration. Pepsi is not using the mark. There is, therefore, abandonment. There is no “residual” goodwill where there is abandonment. As I just wrote with respect to trade dress and private labels, “You can’t stitch together different packaging used at different times to create a ‘dynamic’ or pastiche trade dress protectible under the Lanham Act.”

Same with any trademark: You’re using it or you aren’t. Residue won’t do; you get the entirely satisfying reward of creating a moment in popular culture, or media, history, and no more.

The brand-rich are different from you and me, yes (ever hear of trademark dilution? Or, as Lara Pearson explains, the BLUE IVY trademark application?), but not that different; not yet. Pepsi has moved on and, it’s okay to let go. Thank you for doing so, Pepsi, and letting MOM Brands make this commercial, bringing new life (oops) to your old trademark for a new generation. From now on, whenever I think of oatmeal, I’ll think of you, Pepsi. In the nicest possible way!

The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid. This blog is about trademark law, copyright law, free speech (mostly as it relates to the Internet) and legal issues related to blogging.

As for me, I'm a partner and commercial litigator at Archer & Greiner PC* with offices in New York and New Jersey (but active nationwide) and, some say, "IP maven"* with a special interest in copyright and trademark infringement involving the Internet--including advising clients how to avoid them.

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Then there's this kind of odd thing, and also something called Inspired Sites where this blog is categorized under "Naming / Branding / Language" rather than law, which is, as the young folk say, "kind of cool."

Of course, it's easy to game almost any ranking system -- not that I've tried to... as such. These just are what they are.

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The opinions expressed here are my own, and not necessarily those of Archer & Greiner, P.C.

THIS BLOG IS ONLY A BLOG, NOT LEGAL ADVICE. IT IS IN PART AN ADVERTISEMENT FOR LEGAL SERVICES BY ME, RONALD D. COLEMAN, BUT I AM NOT YOUR LAWYER. YOU ARE NOT MY CLIENT. JUST WALK BESIDE ME AND BE MY FRIEND.

*The term maven is used to mean "wise guy" here and is not meant to suggest that I am certified or otherwise authorized under bar rules to claim "expertise" in any field of legal practice. But try me.